Archive for the ‘Hybrid and Electric Vehicles’ category

Over the years this blog has covered important patent litigation and settlements involving hybrid vehicle technology company Paice and some major automakers, including Hyundai/Kia, Toyota, and Ford (see, e.g., the Ford post here).

Although these cases have been litigated in various forums through the years, Paice was forced to make a tactical shift in venue selection after the U.S. Supreme Court’s eBay v. MercExchange decision in 2006.

In eBay the Supreme Court reversed the U.S. courts’ long-standing practice of automatically issuing an injunction upon a finding of patent infringement and instead held that the traditional four-factor equitable test for injunctive relief must be analyzed in each case brought under the patent statute.

The eBay decision came down just as the Paice-Toyota trial court was deliberating Paice’s motion for an injunction against Toyota. With the trial court suddenly bound to analyze the four injunction factors, it refused to grant an injunction, instead awarding Paice an ongoing royalty of $25 per infringing vehicle (a figure that was later raised to $98 per vehicle).

It is a popular forum for patentees (though only injunctive relief is available, not monetary damages) because the proceedings progress much faster than those in the federal courts.

Also, critically for Paice and other non-practicing entities, the ITC is not bound by the eBay decision, which governs injunctive relief analysis under the patent statute, not Section 337 trade law (for a detailed review of the effect of eBay and the ITC on clean tech patent litigation see my article here).

Facing the very real prospect of an import ban, Toyota came to the negotiating table and, settled the suit, and entered into a licensing deal with Paice.

Which brings us to the latest news and the subject of this post. Paice recently went back to the border and filed a complaint against Volkswagen (together with Porsche and Audi), asking the ITC to investigate alleged infringement of U.S. Patent Nos. 7,237,634, 7,104,347, and 8,214,097.

The three related patents are entitled “Hybrid vehicles” and cover hybrid electric vehicles utilizing an internal combustion engine with series parallel electric motors, regenerative braking, and control circuitry.

The Paice technology, developed back in the 1990s, is called the Hyperdrive System and provides seamless switching between power from an electric motor and an internal combustion engine.

The accused products listed in the complaint are the VW Jetta Hybrid, the Audi Q5 Hybrid, the Audi A3 e-tron Hybrid, the Porsche S E-Hybrid, and the Porsche Panamera S E-Hybrid.

The Paice complaint requests a permanent limited exclusion order that would stop the allegedly infringing hybrid vehicles and components from entering the United States.

It remains to be seen whether Volkswagen, like the other automakers, will determine that it is in its best interest to take a license to Paice’s hybrid vehicle patents.

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A number of new patent infringement lawsuits were filed in January and February in the areas of electric vehicle charging, LEDS, smart grid, and solar battery phone cases.

Electric Vehicle Charging

Technology for Energy Corporation v. Hardy et al.

In a lawsuit against a former employee, Technology for Energy alleges various breach of contract claims, breach of an employment agreement, and requests a declaratory judgment of patent invalidity and unenforceability. The complaint was filed February 22, 2016 in federal court in Knoxville, Tennessee.

The ‘771 Patent is directed to an instrument for testing electric vehicle charging stations (EVCS). Energy delivery from the EVCS to the load is monitored by the instrument to determine energy measurement and billing accuracy of the EVCS.

LEDs

Harvatek Corporation v. Cree, Inc.

This is the third lawsuit between these two LED makers involving white LED lighting technology (see previous posts here and here).

The ‘934 Patent is entitled “White light source from light emitting diode” and is directed to an LED white light source that emits short wavelength color light. The LED has a split metal substrate and a fluorescent glue that covers the LED chip and converts the short wavelength color light into white light.

Harvatek alleges that Cree’s CLM1 Series LED products infringement the ‘934 Patent.

Also filed February 26, 2016, the complaint against U.S.A. Light & Electric asserts the ‘968, ‘844, and ‘518 Patents and alleges that the defendant’s Recessed LED Downlight products infringe the patents-in-suit.

Entitled “Low profile light,” the ’968 Patent is directed to a luminaire including a heat spreader and a heat sink disposed outboard of the heat spreader, an outer optic securely retained relative to the heat spreader and/or the heat sink, and an LED light source.

The ‘518 Patent and the’ 844 Patent are entitled “Low profile light and accessory kit for the same” and relate to LSG’s disc light LED devices.

The ‘851 Patent is entitled “Semiconductor light-emitting device and method for manufacturing the same” and is directed to LEDs having textured districts on the substrate such that inclined layers guide extended defects to designated gettering centers in the trench region where the defects combine with each other. This structure reduces the defect density of the LEDs.

The complaint lists a host of Samsung products including a number of Galaxy smartphones.

Smart Grid

Endeavor MeshTech, Inc. v. Rajant Corporation

Endeavor MeshTech (a wholly-owned subsidiary of patent monetization firm Endeavor IP) sued Rajant in the U.S. District Court for the Eastern District of Pennsylvania on January 4, 2016.

Horstman, a German company, filed this lawsuit against Smart Grid Solutions (SGS) in federal court in Atlanta, Georgia.

Filed on January 12, 2016, the complaint accuses SGS of trade dress infringement and various deceptive trade practices, as well as infringement of U.S. Patent No. D578,478 (‘478 Patent), a design patent entitled “Fiber optic cable.”

The ‘478 Patent protects Horstmann’s fiber optic cable design with each end including a semi-transparent curved end attached to the cable and a ribbed segment terminating at a flange.

The complaint was filed February 12, 2016 in the U.S. District Court for the Central District of California.

The asserted patents are U.S. Patent No. 8,080,975, entitled “Portable and universal hybrid-charging apparatus for portable electronic devices” (‘975 Patent) and U.S. Patent No. 8,604,753, entitled “Method of distributing to a user a remedy for inadequate battery life in a handheld device” (‘753 Patent).

The ‘975 Patent is directed to a modular hybrid-charger assembly comprising a rechargeable internal battery connected to a port operable to function as a tetherless connection to a portable electronic device and a device holder having a framework operable to receive, hold, and release the portable electronic device. The ‘753 Patent claims methods relating to use of the hybrid-charger assembly of the ‘975 Patent.

The accused products are AST’s Enerplex Surfr and Enerplex Surfr Amp cases for the iPhone 6/6s and the Enerplex Surfr for iPhone 5/5s.

Envision Solar (Envision) is a San Diego-based company that makes solar parking structures that can be used to charge electric vehicles, support outdoor digital advertising, and enhance energy security. What makes Envision’s products unique is that unlike most parking lot solar-powered vehicle charging stations, most of the company’s systems have the ability to track the movement of the sun.

According to Envision’s President and CEO Desmond Wheatley, 90% of Envision’s deployments have tracking capability. Why tracking? He echoed my thoughts exactly: because it’s “cool.”

Also, parking lots are “hyper-restrained” in geography so a solar charger needs to maximize energy density in a very small space. Incorporating tracking helps in that regard.

Envision’s two major product offerings are the Solar Tree® and the EV ARC™. The company owns at least seven U.S. patents and pending applications covering various aspects of the technology in these products.

U.S. Patent No. 7,705,277 (‘277 Patent), issued in 2010, covers Envision’s original design. Entitled “Sun tracking solar panels,” the ‘277 Patent is directed to a system for maximizing solar energy utilization by moving a solar panel to track movement of the sun from sunrise to sunset. Movements of the solar panel are accomplished daily in accordance with a programmed schedule of consecutive cycles.

A subsequent patent issued in early 2014 is directed to a refined design better suited for solar tracking in a parking lot. The system covered by U.S. Patent No. 8,648,551 (‘551 Patent) is significant, Wheatley said, because instead of the tracker causing the solar panel to swing in to the drive aisle, it instead bows.

According to the ‘551 Patent, the rotation of a cylindrical knuckle in the tracking system “allow[s] the solar panel to continuously reorient while maintaining a substantially stationary footprint.”

Wheatley told me the company’s most important intellectual property is that around the features of the EV ARC™.

Wheatley mentioned several advantageous features of the EV Arc. First and foremost is its autonomy, i.e., it is not connected to the utility grid. Some of the structural features are also important, including the ability for the thin base plate to support heavy vehicles and the high-traction material of the base plate, which allows it to remain stationary.

U.S. Patent No. 9,209,648, issued in November 2015, is entitled “Self-contained renewable battery charger” and is directed to a charging system (10) comprising a portable unit (12) that includes a moveable docking pad (16) having a base (18) and compartment (20) for holding a storage battery (18).

The portable unit (12) includes a column (24) having a first end (26) mounted onto the docking pad (16) and a second end (28). A solar array (30) is affixed to the second end (28) of the column (24). The unit has a structural canopy with a beam (32) and cross members (34) attached to the column (24) to support the photovoltaic modules of the solar array (30).

The company also has IP around the mobility and installation of its systems, including a specialized trailer and hydraulic ram, ARC™ Mobility, for transportation and deployment purposes.

Wheatley and Envision are very aware of the importance of patent protection in the U.S. and beyond. The company’s patents, he said, “prevent smaller competitors from copying” their technology. They also might stop larger customers from buying pirated products. In general, a strong IP portfolio increases the company’s value in the investor community.

With investments of about $200 billion on EV charging, the company sees China as an important market and has filed patent applications there. Wheatley told me that Chinese patents allow Envision to bring powerful partners aboard in China to protect the company’s business ventures there.

Envision Solar continues to innovate and isn’t stopping at car charging; they’re working on EV ARC™ eBike and eMotorcycle charging as well. Many more patent applications will certainly follow.

Paice has been an extremely successful non-practicing entity, using patent litigation in the federal courts and the U.S. International Trade Commission to bring major automakers to the negotiating table.

Paice has now licensed all or part of its hybrid vehicle technology portfolio to Toyota, Hyundai/Kia, and Ford – three of the world’s six largest automakers. These three companies currently account for 90% of all hybrid vehicle sales in the United States.

Does all this litigation and licensing make Paice one of the oft-maligned “patent trolls?” I think not.

The company should not be put in that category for a couple of reasons. First, the founder of the company and inventor of the technology, Alex Severinsky, is a true innovator and pioneer, having invented much of Paice’s technology at least as early if not earlier than the large automakers.

Most of the patent assertion entities we think of as trolls are not innovators, but instead buy patents to assert in litigation and offer to license.

Second, Paice made genuine efforts at ex ante licensing. That is, the company approached Toyota with offers to license its technology before any hybrid vehicles were ever sold.

This is in contrast to the business model of acquiring and asserting patents, with licensing offers, after the allegedly infringing products have been manufactured and racked up lots of sales (ex post licensing).

Paice’s success is not a surprise when one understands the power of its patents. A 2010 report by a patent analytics firm called Ambercite analyzed 58,000 hybrid car patents and their interrelationships using network patent analysis methodology and found Paice’s portfolio to be the strongest, better than all major car manufacturers’ hybrid car patents.

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The patents-in-suit were U.S. Patent Nos. 7,237,634, 7,104,347, and 7,559,388. All three patents are entitled “Hybrid vehicles” and cover hybrid electric vehicles utilizing an internal combustion engine with series parallel electric motors, regenerative braking, and control circuitry.

The Paice technology is called the Hyperdrive System and provides seamless switching between power from an electric motor and an internal combustion engine.

Recently, a Maryland federal jury returned a big verdict for Paice, deciding that Hyundai and Kia owe $28.9 million in damages for patent infringement. The jury found that all of the asserted claims of the patents were valid and willfully infringed (see the report here on Autoblog and by Bloomberg news here).

The trial lasted eight days, but the jury needed just one day of deliberations to reach a verdict.

According to Paice’s press release, the $28.9 million sum represents a payment of $200 for each infringing hybrid vehicle sold by the defendants through June 30, 2015. The cars at issue were the Hyundai Sonata Hybrid and the Kia Optima Hybrid.

In a recent lawsuit, a Ford Fusion owner has accused the automaker of misrepresenting the fuel efficiency of the hybrid vehicle and distributing a software update that displays false mileage figures.

In the proposed class action complaint filed in California Superior Court in Los Angeles, named plaintiff Dave DeLuca says that, not long after purchasing the vehicle, he realized its actual performance didn’t match the advertised performance.

Mr. DeLuca tested the car under “optimal conditions” as described by a Ford technician. More particularly, he tested the car with the windows up, the air conditioner and stereo turned off, and driving at a speed of 62 miles per hour or less, and the car allegedly underperformed.

When Mr. DeLuca took the car into the dealership, the Ford technician tested the car under the same conditions, got the same results, but told Mr. DeLuca nothing could be done to fix the car because it wasn’t broken.

Up to this point, the allegations are pretty common for this type of lawsuit. Most greenwashing cases against automakers include claims that the hybrid or electric vehicles fail to achieve the advertised fuel efficiency (see, e.g., previous posts hereand here).

What’s new here is the software piece. The DeLuca complaint also alleges that Ford issued a software update for the Fusion Hybrid, claiming the update would increase performance and mileage. After the dealer installed the update in his car, Mr. DeLuca tested its performance again.

On a road trip to Sin City (Viva Las Vegas!), he drove the car under optimal conditions again and observed that the car’s monitor was indeed displaying better mileage and less gas usage. But Mr DeLuca alleges, that was just smoke and mirrors:

[W]hen Mr. DeLuca filled his gas tank at a gas station, he realized the vehicle’s software relayed inaccurate mileage and use of gasoline.

Don’t get too excited, though. This one is fundamentally different from the prior patent pledges. Ford is not donating its patents or even offering limited-time royalty-free licenses to the patents.

Rather, Ford is offering the patents for license “for a fee” as the company’s press release explains. In view of the other automakers’ EV freebies, Ford issued a brief statement in defense of it’s for-profit licensing scheme (reproduced here from a Financial Times article):

Defending the decision to charge for the patents, the company said “We’re proud of the work that we do.” It added: “From the research we’ve conducted already, we feel that licensing is appropriate.”

Not that there’s anything wrong with that. To the contrary, companies should generate revenue from their R&D, their innovation, and their patents.

But the headline of the announcement obscures the fact that it’s a for-profit licensing venture (“Ford Opens Portfolio of Patented Technologies to Competitors to Accelerate Industry-Wide Electrified Vehicle Development”).

In intellectual property, the word “open” signals free use or public domain (e.g., open source), and the headline is particularly misleading in view of the recent Tesla and Toyota royalty-free patent license moves in this field. Note Toyota’s press release also used “open” (“Toyota Opens the Door and Invites the Industry to the Hydrogen Future”).

Of course, reasonable people can differ in opinion as to whether the developing EV industry is better served by truly open patent portfolios or revenue generating licensing opportunities. But either way, the patent holders should not mislead and should get the messaging right.

By the way, this trend of pledging patents appears to be a hot topic: it’s the subject of a recent article by Professor Jorge Contreras called Patent Pledges and a conference held just yesterday at American University.

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A previous post took a deep dive into two recently filed U.S. eco-mark applications filed by General Motors for the marks BOLT and CHEVROLET BOLT (Application Nos. 86357513 and 86357523 for “motor land vehicles, namely, automobiles”).

That post explained how GM could secure federal trademark registrations for these marks without ever actually using them in the United States. The analysis provided support for some of the electric vehicle blogs, which speculated that GM might not actually intend to use the marks at all, but instead was merely using the trademark system to ward off competitors from using them.

We’ve been proven wrong.

At the Detroit Auto Show last month, GM unveiled the Chevrolet Bolt, an all-electric concept car coming to market in 2017. The Bolt supposedly will have a 200-mile driving range (with a battery made by LG Chem), DC fast charging capability, and autonomous driving technology. A recent GM Bolt article confirms production of the Bolt EV.

As discussed in my previous post, U.S. trademark applications filed on the basis of foreign filed applications, as the BOLT and CHEVROLET BOLT applications are (they are based on Brazilian trademark applications) can register in the U.S. by virtue of the foreign applications maturing to registration without the need to actually use the marks in the U.S.

However, without eventual use, typically within three years of the U.S. registration date, the U.S. registrations become vulnerable to cancellation for non-use of the marks. So the owner of a U.S. trademark registration registered solely on the basis of a foreign or international registration (i.e., without use in the United States) cannot successfully enforce its trademark in a U.S. court.

The target production date of 2017 would put GM’s use of its BOLT and CHEVROLET BOLT trademarks comfortably within the three-year period after registration of its trademark applications. So if GM sticks to its plans for the Chevy Bolt, it will have enforceable trademark rights after all.

Before we get into the new news, let’s take a quick look back at the top green IP stories of 2014.

5. GE Wins Ownership of Key Wind Patent*

In what was something of a sideshow, but with major implications for the main event, the Court of Appeals for the Federal Circuit effectively ended a dispute between GE and a former employee, Thomas Wilkins, over ownership of one of the patents involved in larger litigation with Mitsubishi.

A few months later, Mr. Zhan sued Tesla for trademark infringement in China, demanding the American electric car maker stop all sales and marketing activities in China, shut down showrooms and charging facilities, and pay him 23.9 million yuan ($3.85 million) in compensation.

Shortly thereafter, Zhan apparently got his pay day when Tesla resolved the dispute – this time via a direct settlement rather than relying on the Chinese court system. Zhan agreed to settle the dispute “completely and amicably” including consenting to cancellation of his Tesla trademark registrations and applications. He also agreed to transfer his domain names, including tesla.cn and teslamotors.cn to Tesla.

3. GreenShift Loses Big in Ethanol Patent Case

2014 saw a major decision in the patent infringement litigation between GreenShift (with its New York subsidiary, GS Cleantech) and a host of ethanol producers across the midwestern United States over patented ethanol production processes.

GreenShift lost big, with the court making several rulings on infringement, all for defendants. Worse yet for GreenShift, the court held three of the four patents in the key patent family invalid because of the company’s commercial offer to sell the technology more than a year before the August 17, 2004 filing date of the initial provisional patent application that led to the other applications in the family.

The Environment and Natural Resources Division of the U.S. Department of Justice (DOJ) and the California Air Resources Board (CARB) sued Hyundai and Kia, alleging they sold over a million vehicles that did not meet the requirements of the Clean Air Act because the automakers used improper testing procedures and analysis and submitted faulty fuel economy data to the U.S. Environmental Protection Agency.

Hyundai and Kia quickly settled with the DOJ and CARB. Under the settlement, the automakers did not have to admit the truth of the allegations but agreed to pay about $100 million, about $93.6 million to the DOJ and about $6.4 million to the CARB. This is the largest penalty ever imposed under the Clean Air Act.

The car companies also forfeited 4.75 million greenhouse emission credits – earned for building vehicle emissions under the legal limit – which they had previously claimed and are estimated to be worth over $200 million.

In my post on the announcement, I wondered whether the temptation of exploiting Tesla’s technology would outweigh exclusivity concerns:

Ultimately, the impact of Musk’s decision may turn on to what extent other such players will be motivated to invest in manufacturing vehicles, batteries, etc. using Tesla’s patented and patent-pending technology with the obvious upside being the proven innovation that technology brings and the down side being no exclusivity, instead of investing in their own R&D and patent protection where the upside may be exclusivity and the down side may be inferior or unproven technologies.

Only time will tell what, if any, impact Tesla-Patent Commons will have on the electric vehicle market.

There is some curious eco-mark news to report: apparently, last month General Motors filed two notable U.S. trademark applications, one for BOLT and the other for CHEVROLET BOLT.

They are Application Nos. 86357513 and 86357523(BOLT Applications), respectively, and list the goods as “motor land vehicles, namely, automobiles.”

The clean tech and electric vehicle blogosphere was buzzing with speculation as to what this new brand means. Is GM planning to offer additional EVs, perhaps a new low-cost Chevy Volt, a short-range performance vehicle, or a cool new concept car? Maybe different battery sizes?

One clue is that the BOLT applications’ goods listing is much broader than the goods in GM’s prior CHEVROLET VOLT trademark registration, which identified “extended range electric automobiles.” So, contrasted with the VOLT, the BOLT trademark could cover any type of automobile, electric or otherwise.

For now, though, the clean tech blogs had to conclude there is no indication that GM intends to use this new trademark. Inside EVs proposed that GM might be trying to protect itself from a Chinese ripoff called Bolt.

Car companies are constantly taking out trademarks for names they have no intention of using; it’s just a matter of making sure nobody else uses it either.

While car companies may try to keep potential brand names away from their competitors, there are strict legal limits on the ability to protect a trademark that is not in use.

To fully understand this and to put the BOLT Applications in context, we need a bit more information about the U.S. trademark system.

A U.S. trademark application must have one or more legal bases, i.e., a situation (basis) defined by the federal trademark law, to support the filing. The available filing bases are (1) actual use of the mark in interstate commerce, (2) a bona fide intent-to-use the mark in interstate commerce, (3) a foreign trademark application for the same mark and the same goods or services, (4) a foreign registration for the same mark and the same goods or services, and/or (5) extension of an international registration for the same mark and the same goods or services. By far the most common filing bases are the first two.

In the United States, trademark rights flow from, and are contingent upon, use of the mark. Although an applicant can keep a U.S. trademark application pending for about two and a half years based only on the stated intent to use the mark, the U.S. Patent and Trademark Office (USPTO) will not register a trademark in a use-based or intent-to-use application absent proof of use in interstate commerce and there is no enforceable trademark right, even at common law, without use of the mark.

More particularly, to obtain a registration of a use-based or an intent-to-use application, the applicant must prove use of the mark for the goods and/or services listed in the application by submitting a specimen showing such use.

If based on a foreign trademark application or registration or an international registration, however, the applicant does not need to use the mark in the United States to obtain a U.S. registration. The USPTO will register the trademark upon proof that the applicant obtained a foreign registration.

Interestingly, the United States is one of only a handful of countries that require use to register a trademark and have an enforceable right in the mark. Most countries do not require use of the mark to obtain a registration.

So filing a U.S. trademark application based on a foreign or international registration gets around the use requirement (in the United States and potentially anywhere in the world), at least or the purpose of obtaining a U.S. trademark registration.

But that’s not the end of the story. The owner of a U.S. trademark registration registered solely on the basis of a foreign or international registration (i.e., without use in the United States) cannot enforce its trademark in a U.S. court. While some U.S. courts have held that such registrants have standing to sue, even in those courts, the registration would be canceled without use in interstate commerce.

So while a foreign trademark registration can get you a U.S. registration without use in the United States, you probably can’t stop other U.S. users of the mark because your registration would be unenforceable and would not stand up in court.

Now back to GM’s BOLT applications. This is where it gets interesting. The applications are not based on use of the marks in the United States or an intent to use in the United States. Rather, each application is based on a foreign application filing, specifically Brazilian trademark application number 907703178 for CHEVROLET BOLT and 907703070 for BOLT.

Brazil is one of those countries that does not require use to obtain a trademark registration. So GM could get itself U.S. trademark registrations, albeit unenforceable ones, for BOLT and CHEVROLET BOLT without ever using this exciting new brand anywhere in the world.

Even though GM’s U.S. registrations may be unenforceable “paper” registrations, Gas 2.0’s point still has some merit. Ownership of U.S. trademark registrations for the BOLT marks could still scare off potential users and keep competitors at bay for a while.

Don’t be surprised, though, to not see a shiny new Chevy Bolt speeding by you on the highway.

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